when trademark attorney is arbitrarily rejection application

Why was my trademark application rejected?

Not all trademark applications are accepted by the USPTO. Common reasons for trademark registration refusal include a likelihood of confusion or descriptiveness. Trademark registration in the U.S. can be a tricky thing.

Do I need a trademark attorney to file an application?

The United States Patent and Trademark Office (USPTO) recommends hiring a trademark attorney to “help avoid potential pitfalls”. However, using an attorney is not mandatory. The owners of a trademark can choose to file an application by themselves.

What can’t your trademark be?

Your mark can’t be the flag (U.S., state, or other country); it can’t be the name, portrait, or signature of a living person (or deceased U.S. president), at least without their consent; it can’t falsely suggest a connection with a person (alive or dead), institution, or belief; nor can a valid trademark be “functional.”

Can a deceptively misdescriptive trademark be granted registration?

By contrast, a deceptively misdescriptive mark can be granted registration, if there is a showing of secondary meaning. By definition, that would mean the public is “in on it,” and is not deceived, but instead realizes the “deception” and buys the product anyway.

What happens if my trademark application is rejected?

If the TTAB issues a final decision to reject a trademark application, there is only one remaining option for recourse. The applicant must file an appeal with the United States Court of Appeals for the Federal Circuit.

How often are trademark applications rejected?

Absolutely. According to the USPTO, approximately 18% of applications failed during first action in 2016. When you think about it, that number is quite shocking. It means nearly 1-in-5 trademark applications were refused.

What percentage of trademark applications are rejected?

As many as 70% of all USPTO trademark applications are initially rejected by the examining trademark attorney at the Trademark Office. Some Trademark Office actions are scary, complicated, and require an expert trademark attorney to file a proper trademark office action response. Others are simple.

How do you overcome trademark rejection?

4 Ways To Overcome A Likelihood Of Confusion RefusalArgue that the marks or goods are different. ... Consent Agreements – agree to coexist with a prior registrant/applicant. ... Argue the prior registration/application is weak. ... Collateral attack – a last resort.

What are some of the reasons that the USPTO may give in denying an application for trademark registration of a website?

Top 5 Reasons Why USPTO Denied Your Trademark ApplicationKNOWING WHAT CAN (AND CANNOT) BE TRADEMARKED.TIMING.LIKELIHOOD OF CONFUSION.MERELY DESCRIPTIVE AND DECEPTIVELY MISDESCRIPTIVE.GEOGRAPHICALLY DESCRIPTIVE AND GEOGRAPHICALLY DECEPTIVELY MISDESCRIPTIVE.

What is a trademark conflict?

A conflict can be defined as simply as trademarks that are similar to your own (not necessarily identical) and goods and/or services that are related. Note that trademarks that are no longer alive will not conflict with yours.

Is it easy to file a trademark?

Filing a trademark isn't a simple process, but the protection it affords your brand is worth your time and effort. To register a trademark with the U.S. Patent and Trademark Office (USPTO), you will need to fill out and submit a trademark application.

What is publication approval?

A mark that has been “Approved for Publication” means that the examining attorney found no issues that would bar the registration of that trademark and has completed their examination.

What did the Lanham Act establish?

The Lanham Act sets out procedures for federally registering trademarks, states when owners of trademarks may be entitled to federal judicial protection against infringement, and establishes other guidelines and remedies for trademark owners.

What happens if a trademark is objected?

Once the trademark objection reply letter is filed, the Trademark Registrar may call the parties involved for a hearing. He will then pronounce his ruling based on the submissions of the parties. The trademark will be registered if he rules in favour of the applicant.

How do you answer a merely descriptive refusal?

To overcome a §2(e)(1) refusal (i.e., a descriptiveness refusal), a trademark applicant can either (1) submit arguments and evidence to show that the mark is distinct, (2) amend the application to seek registration on the Supplemental Register, or (3) demonstrate that the mark has acquired distinctiveness.

What is the likelihood of confusion test?

A likelihood of confusion exists when an allegedly infringing trademark is likely to cause an appreciable number of reasonably prudent purchasers to be confused as to the source or origin of the products or services it is used to identify.

How many trademark applications are rejected?

But not so fast — according to the United States Patent and Trademark Office (USPTO), about 18% of applications are rejected.

What to do if your trademark includes a generic word?

If your mark includes a word that is generic, you may be asked to add a disclaimer to your application stating that you are not trying to trademark the generic word. For example, if the mark you have applied for is JLK Gloves, the mark could be rejected because the word "gloves" is too generic. You may be asked to file a disclaimer ...

What is a procedural rejection?

A "procedural rejection," happens when you did something technically wrong on the application — skipped a question or answered it incorrectly. A "substantive rejection" happens when there is a problem with the mark itself. The USPTO will notify you if there is a problem with your application.

How long do you have to amend a patent?

Both types of mistakes can be corrected by filing an amendment yourself or with the help of a patent lawyer. You have six months to file your amended application or submit the additional materials requested. You must address all of the reasons for rejection in your amended materials at once.

Is My Trademark Deceptively Misdescriptive?

How do you figure out whether your trademark is deceptively misdescriptive or not? Well, the USPTO uses the following test to determine whether a trademark is deceptively misdescriptive:

Here are Two Examples

Let’s pretend you want to register the word RED as a trademark for dish washing soap. However, your dish soap is actually blue in color. Would the USPTO find your trademark to be deceptively misdescriptive? Well, RED certainly misdescribes your products in that your dish soap is actually blue and not red.

How Can I Overcome a Deceptively Misdescriptive Rejection?

If the trademark examining attorney refuses registration of your mark on the basis that it’s deceptively misdescriptive, you essentially have four options to attempt to overcome the rejection:

Questions About Deceptively Misdescriptive Trademarks?

I’m experienced US trademark attorney Morris Turek.

Why would the USPTO refuse a trademark application?

(The Lanham Act is the main piece of trademark legislation for the United States.) 1. Likelihood of Confusion.

What is the most common reason an application will be rejected by the USPTO?

1. Likelihood of Confusion. Likelihood of confusion is the most common reason an application will be rejected by the USPTO. Essentially, if there is a high probability that the general public will confuse your trademark with someone else’s (already existing) trademark, your registration will not be granted.

Why is my trademark not registered?

Common reasons for trademark registration refusal include a likelihood of confusion or descriptiveness. Trademark registration in the U.S. can be a tricky thing. For one thing, unlike in most countries, trademark registration here is not actually a requirement to enjoying rights in the mark—that is, you have some rights in the mark ...

What is merely descriptive mark?

A “merely descriptive” mark is one that simply identifies a quality, function, or characteristic of the service/product.

What does it mean when your mark is misdescriptive?

If your mark is “geographically deceptively misdescriptive,” that means it primarily falsely indicates the product’s geographic origin. For example, “Wisconsin Cheese” for cheese made in Utah. Simple enough. The tricky part is where the exceptions fall.

Why are the courts there refusing to allow rights?

The courts there, as well, have refused to allow rights, because those flourishes and ornamentations must be available to competitors. 6. Surname. If the “primary significance” of the mark to the purchasing public is merely a surname, registration will be refused.

When was the Redskins trademark canceled?

When, in 2014, the USPTO canceled the registration of the “Redskins” mark—and then again in July, 2015, when a federal judge affirmed the cancellation—everyone in the U.S. was suddenly exposed to this fundamental trademark doctrine. (There, it was “cancellation,” and not “refusal,” because the registration had already been granted.

Descriptiveness

Another common reason applications are denied involve the inability to register a mark that is descriptive. When an application is rejected for this reason it can be very difficult to overcome the rejection.

Likelihood of Confusion

Another complicated rejection is likelihood of confusion with a prior registration. When an examiner reviews your application, he or she will search for prior registrations. If your mark is likely to cause consumer confusion with a prior application, you will get an Office Action.

Be Proactive

The good news is many of these issues can be avoided or at least mitigated to some degree with proper due diligence before submitting an application. You should always perform a trademark search before submitting your application and it is often a best practice to seek legal counsel to assist with your application.

Types of Mistakes

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Applicant Name

Likelihood of Confusion

Too Generic

Unclear Specimen

Wrong Trademark Class